Intellectual Ventures I LLC v. T Mobile USA, Inc. et al
Filing
197
CLAIM CONSTRUCTION MEMORANDUM AND ORDER. Signed by District Judge Rodney Gilstrap on 11/6/2018. (ch, )
THE UNITED STATES DISTRICT COURT
FOR THE EASTERN DISTRICT OF TEXAS
MARSHALL DIVISION
INTELLECTUAL VENTURES I LLC,
Plaintiff,
v.
T MOBILE USA, INC., T-MOBILE US,
INC., ERICSSON INC.,
TELEFONAKTIEBOLAGET LM
ERICSSON,
Defendants.
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§ CASE NO. 2:17-CV-577-JRG
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CLAIM CONSTRUCTION
MEMORANDUM AND ORDER
Before the Court is the Opening Claim Construction Brief (Dkt. No. 165) filed by Plaintiff
Intellectual Ventures I, LLC (“Plaintiff” or “IV”). Also before the Court are Defendants T-Mobile
USA, Inc., T-Mobile US, Inc. (“T-Mobile”), Ericsson Inc., and Telefonaktiebolaget LM Ericsson’s
(“Ericsson’s”) (collectively, “Defendants’”) Responsive Claim Construction Brief (Dkt. No. 118)
and Plaintiff’s reply (Dkt. No. 126).
Table of Contents
I. BACKGROUND ....................................................................................................................... 1
II. LEGAL PRINCIPLES ........................................................................................................... 1
III. AGREED TERMS................................................................................................................. 6
IV. DISPUTED TERMS .............................................................................................................. 6
A. “in an isochronous manner” .................................................................................................. 6
B. “periodic variation” ............................................................................................................... 9
C. “host workstation” ............................................................................................................... 12
D. “to optimize end-user quality of service (QoS) for an Internet Protocol (IP) flow,”
“so as to optimize end-user quality of service (QoS) associated with said IP flow,”
and “so as to optimize end-user internet protocol (IP) quality of service (QoS)” .............. 15
E. “assigning means for assigning future slots of a transmission frame to a portion of
said IP flow in said transmission frame for transmission over said shared wireless
network”.............................................................................................................................. 23
F. “means for applying an advanced reservation algorithm”................................................... 26
G. “means for reserving a first slot for a first data packet of an Internet Protocol (IP)
flow in a future transmission frame based on said algorithm” ........................................... 29
H. “means for reserving a second slot for a second data packet of said IP flow in a
transmission frame subsequent in time to said future transmission frame based on
said algorithm” .................................................................................................................... 31
I. “means for taking into account service level agreement (SLA) based priorities for said
IP flow” ............................................................................................................................... 33
J. “the analyzed contents” and “the analyzed packet contents” ............................................... 35
K. “allocating the shared wireless bandwidth between the wireless base station
transmitting in the downlink direction and the at least one CPE station transmitting
in the uplink direction” and “allocate wireless bandwidth between the uplink
direction and the downlink direction responsive to the analyzed packet contents and
the analyzed reservation requests” ...................................................................................... 38
L. “said plurality of packets” ................................................................................................... 40
V. CONCLUSION...................................................................................................................... 42
I. BACKGROUND
On August 9, 2017, Plaintiff brought suit alleging infringement of United States Patents
No. 6,628,629 (“the ’629 Patent”), 7,359,971 (“the ’971 Patent”), 7,412,517 (“the ’517 Patent”),
and RE46,206 (“the ’206 Patent”) (collectively, “the patents-in-suit”). (See Dkt. No. 1.)
The ’629 Patent, titled “Reservation Based Prioritization Method for Wireless
Transmission of Latency and Jitter Sensitive IP-Flows in a Wireless Point to Multi-Point
Transmission System” and issued on September 30, 2003, bears the earliest priority date of
July 10, 1998. The Abstract of the ’629 Patent states:
A wireless telecommunications network having superior quality of service is
provided. A system and method for assigning future slots of a transmission frame
to a data packet in the transmission frame for transmission over a wireless
telecommunication network system includes applying an advanced reservation
algorithm, reserving a first slot for a first data packet of an internet protocol (IP)
flow in a future transmission frame based on the algorithm, reserving a second slot
for a second data packet of the IP flow in a transmission frame subsequent in time
to the future transmission frame based on the algorithm, wherein the second data
packet is placed in the second slot in an isochronous manner to the placement of
the first data packet in the first slot. There may be a periodic variation between the
placement of the first data packet in the first slot and the placement of second data
packet in the second slot or no periodic variation between placements of slots. The
advanced reservation algorithm makes a determination whether the IP flow is jittersensitive.
The parties submit that the patents-in-suit all share a common specification. (See Dkt. No.
118 at 2.)
II. LEGAL PRINCIPLES
It is understood that “[a] claim in a patent provides the metes and bounds of the right which
the patent confers on the patentee to exclude others from making, using or selling the protected
invention.” Burke, Inc. v. Bruno Indep. Living Aids, Inc., 183 F.3d 1334, 1340 (Fed. Cir. 1999).
Claim construction is clearly an issue of law for the court to decide. Markman v. Westview
Instruments, Inc., 52 F.3d 967, 970–71 (Fed. Cir. 1995) (en banc), aff’d, 517 U.S. 370 (1996).
1
“In some cases, however, the district court will need to look beyond the patent’s intrinsic
evidence and to consult extrinsic evidence in order to understand, for example, the background
science or the meaning of a term in the relevant art during the relevant time period.” Teva Pharms.
USA, Inc. v. Sandoz, Inc., 135 S. Ct. 831, 841 (2015) (citation omitted). “In cases where those
subsidiary facts are in dispute, courts will need to make subsidiary factual findings about that
extrinsic evidence. These are the ‘evidentiary underpinnings’ of claim construction that we
discussed in Markman, and this subsidiary factfinding must be reviewed for clear error on appeal.”
Id. (citing 517 U.S. 370).
To ascertain the meaning of claims, courts look to three primary sources: the claims, the
specification, and the prosecution history. Markman, 52 F.3d at 979. The specification must
contain a written description of the invention that enables one of ordinary skill in the art to make
and use the invention. Id. A patent’s claims must be read in view of the specification, of which
they are a part. Id. For claim construction purposes, the description may act as a sort of dictionary,
which explains the invention and may define terms used in the claims. Id. “One purpose for
examining the specification is to determine if the patentee has limited the scope of the claims.”
Watts v. XL Sys., Inc., 232 F.3d 877, 882 (Fed. Cir. 2000).
Nonetheless, it is the function of the claims, not the specification, to set forth the limits of
the patentee’s invention. Otherwise, there would be no need for claims. SRI Int’l v. Matsushita
Elec. Corp., 775 F.2d 1107, 1121 (Fed. Cir. 1985) (en banc). The patentee is free to be his own
lexicographer, but any special definition given to a word must be clearly set forth in the
specification. Intellicall, Inc. v. Phonometrics, Inc., 952 F.2d 1384, 1388 (Fed. Cir. 1992).
Although the specification may indicate that certain embodiments are preferred, particular
embodiments appearing in the specification will not be read into the claims when the claim
2
language is broader than the embodiments. Electro Med. Sys., S.A. v. Cooper Life Sciences, Inc.,
34 F.3d 1048, 1054 (Fed. Cir. 1994).
This Court’s claim construction analysis is substantially guided by the Federal Circuit’s
decision in Phillips v. AWH Corporation, 415 F.3d 1303 (Fed. Cir. 2005) (en banc). In Phillips,
the court set forth several guideposts that courts should follow when construing claims. In
particular, the court reiterated that “the claims of a patent define the invention to which the patentee
is entitled the right to exclude.” Id. at 1312 (quoting Innova/Pure Water, Inc. v. Safari Water
Filtration Sys., Inc., 381 F.3d 1111, 1115 (Fed. Cir. 2004)). To that end, the words used in a claim
are generally given their ordinary and customary meaning. Id. The ordinary and customary
meaning of a claim term “is the meaning that the term would have to a person of ordinary skill in
the art in question at the time of the invention, i.e., as of the effective filing date of the patent
application.” Id. at 1313. This principle of patent law flows naturally from the recognition that
inventors are usually persons who are skilled in the field of the invention and that patents are
addressed to, and intended to be read by, others skilled in the particular art. Id.
Despite the importance of claim terms, Phillips made clear that “the person of ordinary
skill in the art is deemed to read the claim term not only in the context of the particular claim in
which the disputed term appears, but in the context of the entire patent, including the
specification.” Id. Although the claims themselves may provide guidance as to the meaning of
particular terms, those terms are part of “a fully integrated written instrument.” Id. at 1315
(quoting Markman, 52 F.3d at 978). Thus, the Phillips court emphasized the specification as being
the primary basis for construing the claims. Id. at 1314–17. As the Supreme Court stated long
ago, “in case of doubt or ambiguity it is proper in all cases to refer back to the descriptive portions
of the specification to aid in solving the doubt or in ascertaining the true intent and meaning of the
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language employed in the claims.” Bates v. Coe, 98 U.S. 31, 38 (1878). In addressing the role of
the specification, the Phillips court quoted with approval its earlier observations from Renishaw
PLC v. Marposs Societa’ per Azioni, 158 F.3d 1243, 1250 (Fed. Cir. 1998):
Ultimately, the interpretation to be given a term can only be determined and
confirmed with a full understanding of what the inventors actually invented and
intended to envelop with the claim. The construction that stays true to the claim
language and most naturally aligns with the patent’s description of the invention
will be, in the end, the correct construction.
Phillips, 415 F.3d at 1316. Consequently, Phillips emphasized the important role the specification
plays in the claim construction process.
The prosecution history also continues to play an important role in claim interpretation.
Like the specification, the prosecution history helps to demonstrate how the inventor and the
United States Patent and Trademark Office (“PTO”) understood the patent. Id. at 1317. Because
the file history, however, “represents an ongoing negotiation between the PTO and the applicant,”
it may lack the clarity of the specification and thus be less useful in claim construction proceedings.
Id. Nevertheless, the prosecution history is intrinsic evidence that is relevant to the determination
of how the inventor understood the invention and whether the inventor limited the invention during
prosecution by narrowing the scope of the claims. Id.; see Microsoft Corp. v. Multi-Tech Sys.,
Inc., 357 F.3d 1340, 1350 (Fed. Cir. 2004) (noting that “a patentee’s statements during
prosecution, whether relied on by the examiner or not, are relevant to claim interpretation”).
Phillips rejected any claim construction approach that sacrificed the intrinsic record in
favor of extrinsic evidence, such as dictionary definitions or expert testimony. The en banc court
condemned the suggestion made by Texas Digital Systems, Inc. v. Telegenix, Inc., 308 F.3d 1193
(Fed. Cir. 2002), that a court should discern the ordinary meaning of the claim terms (through
dictionaries or otherwise) before resorting to the specification for certain limited purposes.
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Phillips, 415 F.3d at 1319–24. According to Phillips, reliance on dictionary definitions at the
expense of the specification had the effect of “focus[ing] the inquiry on the abstract meaning of
words rather than on the meaning of claim terms within the context of the patent.” Id. at 1321.
Phillips emphasized that the patent system is based on the proposition that the claims cover only
the invented subject matter. Id.
Phillips does not preclude all uses of dictionaries in claim construction proceedings.
Instead, the court assigned dictionaries a role subordinate to the intrinsic record. In doing so, the
court emphasized that claim construction issues are not resolved by any magic formula. The court
did not impose any particular sequence of steps for a court to follow when it considers disputed
claim language. Id. at 1323–25. Rather, Phillips held that a court must attach the appropriate
weight to the intrinsic sources offered in support of a proposed claim construction, bearing in mind
the general rule that the claims measure the scope of the patent grant.
The Supreme Court of the United States has “read [35 U.S.C.] § 112, ¶ 2 to require that a
patent’s claims, viewed in light of the specification and prosecution history, inform those skilled
in the art about the scope of the invention with reasonable certainty.” Nautilus, Inc. v. Biosig
Instruments, Inc., 134 S. Ct. 2120, 2129 (2014). “A determination of claim indefiniteness is a
legal conclusion that is drawn from the court’s performance of its duty as the construer of patent
claims.” Datamize, LLC v. Plumtree Software, Inc., 417 F.3d 1342, 1347 (Fed. Cir. 2005)
(citations and internal quotation marks omitted), abrogated on other grounds by Nautilus, 134
S. Ct. 2120. “Indefiniteness must be proven by clear and convincing evidence.” Sonix Tech. Co.
v. Publ’ns Int’l, Ltd., 844 F.3d 1370, 1377 (Fed. Cir. 2017).
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III. AGREED TERMS
In their July 25, 2018 Revised Joint Claim Construction and Prehearing Statement (Dkt.
No. 110-1, Ex. A) and their August 22, 2018 Joint Claim Construction Chart (Dkt. No. 128-1), the
parties submitted the following agreed-upon constructions:
Term
Construction
“reserving a second slot for a second data
packet of said IP flow in a transmission frame,
subsequent in time to said future transmission
frame”
“reserving a second slot for a second data
packet of said IP flow in a transmission frame
subsequent in time to said future transmission
frame”
(’629 Patent, Claim 1)
The parties agree that the comma is a
typographical printing error.
“unlink direction”
“uplink direction”
(’517 Patent, Claim 1)
The parties agree that the “n” is a
typographical printing error and should be a
“p.”
“customer
station(s)”
premises
equipment
(’517 Patent, Claims 1, 12)
(CPE) “devices residing on the premises of a
customer and used to connect to a telephone
network, including ordinary telephones, key
telephone systems, PBXs, video conferencing
devices and modems”
(’206 Patent, Claims 1, 112, 114)
“LIP flow”
“IP flow”
(’206 Patent, Claim 32)
The parties agree that the “L” is a
typographical printing error.
IV. DISPUTED TERMS
A. “in an isochronous manner”
Plaintiff’s Proposed Construction
Defendants’ Proposed Construction
“in a manner which provides for consistent “according to a consistent time interval”
timed access”
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(Dkt. No. 110, Ex. B at 1; Dkt. No. 111 at 3; Dkt. No. 118 at 10; Dkt. No. 128-1 at 1.) The parties
submit that this term appears in Claim 1 of the ’629 Patent, Claim 12 of the ’971 Patent, and Claim
123 of the ’206 Patent. (Dkt. No. 110, Ex. B at 1.)
(1) The Parties’ Positions
Plaintiff argues that whereas Plaintiff’s proposed construction is taken from the
specification, “Defendants’ construction unnecessarily alters the patentee’s definition.” (Dkt. No.
111 at 4.)
Defendants respond: “The patent explicitly defines an isochronous connection as one that
is ‘in phase with respect to time,’ and it equates that articulation with a more layman-friendly
explanation of delivering packets ‘at consistent time intervals.’” (Dkt. No. 118 at 11 (quoting ’629
Patent at 61:41–46).)
Plaintiff replies that Defendants’ proposal of “‘consistent time interval’ has no antecedent
in the specification and is being used improperly to try to shade the meaning of the claim for later
stages of these proceedings.” (Dkt. No. 126 at 1.)
(2) Analysis
Plaintiff’s proposal is unclear as to the meaning of “access.” Even though that word
appears in one of the below-reproduced disclosures, referring to “access” would not be consistent
with the context in which the disputed term appears in the claims. Claim 1 of the ’629 Patent, for
example, recites the disputed term in the context of placing a data packet in a slot (emphasis
added):
1. A method for assigning future slots of a transmission frame to a data packet in
the transmission frame for transmission over a wireless medium, comprising:
applying a reservation algorithm;
reserving a first slot for a first data packet of an internet protocol (IP) flow
in a future transmission frame based on said reservation algorithm; and
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reserving a second slot for a second data packet of said IP flow in a
transmission frame, subsequent in time to said future transmission frame based on
said reservation algorithm,
wherein said second data packet is placed in said second slot in an
isochronous manner to the placing of said first data packet in said first slot.
As to the proper construction, the specification discloses:
In legacy networks created primarily for voice traffic by telephone companies, data
transmission was accomplished with reference to a circuit-centric definition of
[Quality of Service (“QoS”)]. In this definition, QoS implied the ability to carry
asynchronous (i.e. transmission of data through start and stop sequences without
the use of a common clock) as well as isochronous (i.e. consistent timed access of
network bandwidth for time-sensitive voice and video) traffic.
’629 Patent at 13:53–60 (emphasis added).
For calls that are sensitive to jitter, meaning calls that are time sensitive, it is
important to maintain an isochronous (i.e., in phase with respect to time)
connection. With such signals, it is important that the data be dispersed in the same
slot between frames, or in slots having a periodic variation between frames. For
example, vertical reservation 1480 shows a jitter sensitive signal receiving the same
slot for downlink communications in each frame. Specifically, the signal is
assigned slot 1422 in frames 1402-1416. If the frame-to-frame interval is 0.5 ms,
then a slot will be provided to the IP flow every 0.5 ms. As another example,
diagonal reservation 1482 shows a jitter sensitive signal receiving a slot varying by
a period of one between sequential frames. Specifically, the signal is assigned slot
1440 in frame 1402, slot 1438 in slot [sic, frame] 1404, . . . slot 1426 in frame 1416,
to create a “diagonal.” If the frame-to-frame interval is 0.5 ms and the slot-to-slot
interval is 0.01 ms, then a slot can be provided to the IP flow every 0.5 minus 0.01,
equals 0.49 mms [sic, ms]. Thus, to decrease the frame interval, a diagonal
reservation of positive slope can be used. To obtain an increased frame interval, a
diagonal of negative slope such as, e.g., negative slope diagonal uplink reservation
1486. The diagonal reservation 1482 can also be more pronounced (i.e., using a
greater or lesser slope), depending on the period between sequential frames desired.
Reservation patterns 1480, 1482, 1484 and 1486 are useful patterns for jitter
sensitive communications. Also illustrated is a vertical reservation 1486, similar to
vertical reservation 1480, useful for a jitter sensitive communication in the uplink
direction.
Id. at 61:41–62:3 (emphasis added); see also id. at 50:59–61, Fig. 14. At the September 5, 2018
hearing, Plaintiff was amenable to construing “isochronous” to mean “in phase with respect to
time,” as disclosed above. (See Dkt. No. 151 at 5:16–20.)
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Yet, while the use of “i.e.” in these disclosures indicates that “isochronous” has a particular
meaning, the disclosure of “i.e. in phase with respect to time” is unclear and does not adequately
address the meaning of “isochronous manner,” as used in the claims at issue here. The two
separate, different above-reproduced uses of “i.e.” prevent a finding of any clear definition by the
patentee. See Renishaw, 158 F.3d at 1249 (“The patentee’s lexicography must, of course, appear
with reasonable clarity, deliberateness, and precision before it can affect the claim.”); see also CCS
Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359, 1366 (Fed. Cir. 2002) (“[T]he claim term will not
receive its ordinary meaning if the patentee acted as his own lexicographer and clearly set forth a
definition of the disputed claim term in either the specification or prosecution history.”) (emphasis
added).
Instead, the context provided by these disclosures supports Defendants’ proposed
construction, in particular as to consistency with respect to time.
Moreover, Defendants’ proposal comports with technical dictionary definitions of
“isochronous” that refer to a “time interval,” a “constant phase relationship,” and “a fixed
frequency or period.” (Dkt. No. 118, Ex. 2, Telephony’s Dictionary 165 (2d ed. 1986); id., Ex. 3,
McGraw-Hill Dictionary of Scientific and Technical Terms 1057 (5th ed. 1994).)
The Court therefore hereby construes “in an isochronous manner” to mean “according
to a consistent time interval.”
B. “periodic variation”
Plaintiff’s Proposed Construction
Defendants’ Proposed Construction
Plain meaning, “regular variation of the “changing of the placement between frames,
location within frames into which the data is while maintaining a consistent time interval”
successively placed”
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(Dkt. No. 110, Ex. B at 2; Dkt. No. 111 at 4; Dkt. No. 118 at 13; Dkt. No. 128-1 at 3.) The parties
submit that this term appears in Claim 3 of the ’629 Patent and Claim 14 of the ’971 Patent. (Dkt.
No. 110, Ex. B at 2.)
(1) The Parties’ Positions
Plaintiff argues: “Defendants’ proposed construction is unhelpful and designed to sow jury
confusion. It is the location of the data packet within the transmission frame that varies. The
placement does not change between frames as Defendants propose.” (Dkt. No. 111 at 5.)
Defendants respond that “Defendants’ construction memorializes what is undisputed;
although isochronous placement with ‘periodic variation’ allows the particular slot for the packet
to change between frames, the interval between packet slots must be the same” (as required by the
independent claims from which the claims here at issue depend). (Dkt. No. 118 at 13.) Defendants
argue that Plaintiff’s proposed construction “could be misinterpreted to mean that, although this
dependent claim does not permit any regular variation of the slot location, it is acceptable in this
claim (and therefore in the independent claims) to have an irregular variation of the slot location.”
(Id. at 14.)
Plaintiff replies that, under Defendants’ proposed construction, “[t]he relationship between
frames, slots, and consistent time intervals is unclear, and there is no way that a jury will
understand what this means.” (Dkt. No. 126 at 1.)
(2) Analysis
Claims 1–3 of the ’629 Patent,1 for example, recite (emphasis added):
1. A method for assigning future slots of a transmission frame to a data packet in
the transmission frame for transmission over a wireless medium, comprising:
applying a reservation algorithm;
1
Claim 2 of the ’629 Patent is not asserted but has been reproduced here for context. Claims 2
and 3 depend from Claim 1, which is likewise reproduced here for context.
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reserving a first slot for a first data packet of an internet protocol (IP) flow
in a future transmission frame based on said reservation algorithm; and
reserving a second slot for a second data packet of said IP flow in a
transmission frame, subsequent in time to said future transmission frame based on
said reservation algorithm,
wherein said second data packet is placed in said second slot in an
isochronous manner to the placing of said first data packet in said first slot.
2. The method of claim 1, wherein there is a periodic variation between the placing
of said first data packet in said first slot and the placing of second data packet in
said second slot.
3. The method of claim 1, wherein there is no periodic variation between the
placing of said first data packet in said first slot and the placing of second data
packet in said second slot.
The claims thus recite variation, and Plaintiff acknowledges that where variation is periodic
it “varies by a regular amount.” (Dkt. No. 111 at 4.) Also, the specification provides context in
which “varying by a period” refers to repeatedly varying by a particular amount from one frame
to the next:
As another example, diagonal reservation 1482 shows a jitter sensitive signal
receiving a slot varying by a period of one between sequential frames. Specifically,
the signal is assigned slot 1440 in frame 1402, slot 1438 in slot [sic, frame] 1404, .
. . slot 1426 in frame 1416, to create a “diagonal.” If the frame-to-frame interval is
0.5 ms and the slot-to-slot interval is 0.01 ms, then a slot can be provided to the IP
flow every 0.5 minus 0.01, equals 0.49 mms [sic, ms].
’629 Patent at 61:51–59 (ellipsis in original; emphasis added); see id. at Fig. 14.
As to Plaintiff’s proposal of “frames into which the data is successively placed” and
Defendants’ proposal of “between frames,” the parties’ proposals are directed to other claim
language and should not be incorporated within the construction of “periodic variation.”
The Court therefore hereby construes “periodic variation” to mean “repeated variation
by a particular amount.”
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C. “host workstation”
Plaintiff’s Proposed Construction
Defendants’ Proposed Construction
Plain meaning, “a computer or other device
that communicates with other computers on a
network and includes a terminal or interface to
accept input”
“end-point running one or more applications
and capable of serving as the source or
destination of an IP flow to or from a
subscriber end-point”2
(Dkt. No. 110, Ex. B at 3; Dkt. No. 111 at 5; Dkt. No. 118 at 14; Dkt. No. 128-1 at 4–5.) The
parties submit that this term appears in Claim 12 of the ’971 Patent. (Dkt. No. 110 Ex. B at 3.)
(1) The Parties’ Positions
Plaintiff argues that “‘host workstation’ is a commonly used generic term,” and
“Defendants improperly try to limit this general term to a narrow example . . . .” (Dkt. No. 111
at 5, 7.)
Defendants respond that “[n]ot every computer with an interface is a ‘host’ workstation,”
and “IV’s construction improperly includes intermediate devices, such as routers (computers that
communicate with other computers over a network and include an interface to accept input) . . . .”
(Dkt. No. 118 at 16.)
Plaintiff replies: “A ‘host computer’ is a staple term of computer science, which appears in
tens of thousands of patents in the PTO database. The word ‘host’ simply means that the device
can connect to a network. Similarly, a ‘host workstation’ is a host computer that also functions as
a workstation—i.e., it has a terminal or interface to accept input.” (Dkt. No. 126 at 2.)
(2) Analysis
The specification refers to “host computers” as well as to “workstation[s]”:
Network 148 includes an example local area network including a plurality of host
computers such as, e.g., client workstation 138 and server 136, coupled together
2
Defendants previously proposed: “end-point running one or more applications and serving as the
source or destination of an IP flow to or from a subscriber end-point.” (Dkt. No. 110, Ex. B at 3.)
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by wiring including network interface cards (NICs) and a hub, such as, e.g., an
Ethernet hub. The LAN is coupled to data network 142 by a network router 140
which permits data traffic to be routed to workstations 144 and 146 from client 138
and server 136.
’971 Patent at 30:49–56 (emphasis added); see id. at 31:56–60 (“A local area network (LAN) can
be thought of as a plurality of host computers interconnected via network interface cards (NICs)
in the host computers. The NICs are connected via, for example, copper wires so as to permit
communication between the host computers.”).
This disclosure is consistent with Defendants’ proposal that a “host workstation” is an end
point rather than an intermediate device such as “a network router” or “an Ethernet hub” or, for
that matter, “wiring.” ’971 Patent at 30:49–56; see id. at Fig. 3B. As Defendants have urged, this
understanding gives meaning to the constituent term “host.” See Merck & Co. v. Teva Pharm.
USA, Inc., 395 F.3d 1364, 1372 (Fed. Cir. 2005) (“A claim construction that gives meaning to all
the terms of the claim is preferred over one that does not do so.”). Plaintiff argued at the September
5, 2018 hearing that Plaintiff’s proposal of requiring “a terminal or interface to accept input” would
exclude network routers, but Plaintiff failed to demonstrate how this is so. Plaintiff has also urged
that the specification refers to a “host workstation” in terms of accepting input, but Plaintiff has
not shown how its cited disclosures compel such a construction. See ’971 Patent at 30:53–56,
32:6–9, 64:1–4, 64:24–31, 72:36–41, 73:47–49, Figs. 1, 2A.
As to Defendants’ proposal of referring to an “IP flow,” this proposal is consistent with the
context in which the disputed term is used in the claim here at issue, namely Claim 12 of the ’971
Patent, which recites (emphasis added):
12. A quality of service (QoS) aware, wireless communications system comprising:
a wireless access point base station coupled to a first data network;
one or more host workstations coupled to said first data network;
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one or more wireless network stations in wireless communication with said
wireless access point base station over a shared wireless network using a packetcentric protocol; and
a scheduler that allocates resources of said shared wireless network among
said wireless network stations to optimize end-user quality of service (QoS) for an
Internet Protocol (IP) flow, wherein said IP flow is associated with at least one of
a latency-sensitive and a jitter-sensitive application;
wherein said scheduler comprises assigning means for assigning future slots
of a transmission frame to a portion of said IP flow in said transmission frame for
transmission over said shared wireless network,
wherein said assigning means comprises:
means for applying an advanced reservation algorithm[;]
means for reserving a first slot for a first data packet of an Internet Protocol
(IP) flow in a future transmission frame based on said algorithm[;]
means for reserving a second slot for a second data packet of said IP flow
in a transmission frame subsequent in time to said future transmission frame based
on said algorithm,
wherein said second data packet is placed in said second slot in an
isochronous manner to the placing of said first data packet in said first slot.
Defendants’ proposal of referring to an “IP flow” is also consistent with the specification.
See ’971 Patent at 75:52–57 (“IP packet flow from subscriber workstation . . . to host
workstation . . .”), 75:66–76:25.
As to Defendants’ proposal of “running one or more
applications,” Plaintiff “does not dispute that a host workstation runs applications . . . .” (Dkt. No.
126 at 2.)
Defendants have not persuasively justified their proposal, however, of “to or from a
subscriber end-point,” which does not find support in surrounding claim language or in any
definition or disclaimer in the intrinsic evidence.
Based on the foregoing, the Court hereby construes “host workstation” to mean
“end-point device that can run one or more applications and that is capable of serving as the
source or destination of an IP flow.”
14
D. “to optimize end-user quality of service (QoS) for an Internet Protocol (IP) flow,” “so as
to optimize end-user quality of service (QoS) associated with said IP flow,” and “so as to
optimize end-user internet protocol (IP) quality of service (QoS)”
“to optimize end-user quality of service (QoS) for an Internet Protocol (IP) flow”
(’971 Patent, Claim 12; ’206 Patent, Claim 121)
Plaintiff’s Proposed Construction
Defendants’ Proposed Construction
“to differentiate between types of traffic or Indefinite
service types and allocate a different level of
system resources to an Internet Protocol (IP)
flow”
“so as to optimize end-user quality of service (QoS) associated with said IP flow”
(’206 Patent, Claim 1)
Plaintiff’s Proposed Construction
Defendants’ Proposed Construction
“so as to differentiate between types of traffic Indefinite
or service types and allocate a different level
of system resources to said IP flow”
“so as to optimize end-user internet protocol (IP) quality of service (QoS)”
(’206 Patent, Claim 19)
Plaintiff’s Proposed Construction
Defendants’ Proposed Construction
“so as to differentiate between types of traffic Indefinite
or service types and allocate a different level
of system resources to an Internet Protocol (IP)
flow”
(Dkt. No. 110, Ex. B at 3‒5, 7; Dkt. No. 111 at 8; Dkt. No. 118 at 2; Dkt. No. 128-1 at 6‒8.)
(1) The Parties’ Positions
Plaintiff argues that “Quality of Service or ‘QoS’ is a well understood term in the
telecommunications world,” and a person of ordinary skill in the art would understand that “end
user QoS associated with an IP flow refers to specific metrics of a data transmission link, such as
15
packet loss, bit rate, latency, and jitter that reflect the QoS for a particular type of IP flow.”
(Dkt. No. 111 at 8–9.) Plaintiff cites the specification as well as prosecution history. (See id. at 9–
12.) Plaintiff concludes that Defendants have failed to demonstrate indefiniteness. (Id. at 12–14.)
Defendants respond that “‘optimize’ is an indefinite, subjective term of degree that varies
based on user preferences, and neither the specification nor the prosecution history provides
objective criteria for ‘optimizing’ end-user quality of service (QoS).” (Dkt. No. 118 at 6.)
Defendants also submit that the District of Delaware found indefinite the term “to optimize end
user application IP QoS requirements of said software application” in related United States Patent
No. 6,640,248. (Id. at 2.) Further, Defendants argue that “IV’s proposed construction wrongly
collapses two separately-recited claim requirements: optimizing end-user QoS and classifying
traffic based on end-user QoS requirements.” (Id. at 7.)
Plaintiff replies that “[u]nder IV’s construction the asserted claims are not indefinite
because a person of ordinary skill would understand with reasonable certainty how to optimize
end-user QoS for an IP flow.” (Dkt. No. 126 at 2.) Plaintiff also argues that “the patents teach
how to optimize an IP flow by applying a set of parameters, such as the frequency of dropped
packets or maximum delay between packets, to achieve a desired set of metrics for an IP flow of
a particular type.” (Id. at 5.)
(2) Analysis
“Claim language employing terms of degree has long been found definite where it provided
enough certainty to one of skill in the art when read in the context of the invention.” Interval
Licensing LLC v. AOL, Inc., 766 F.3d 1364, 1370 (Fed. Cir. 2014). “[A]bsolute or mathematical
precision is not required.” Id.; see id. (“We do not understand the Supreme Court to have implied
in Nautilus . . . that terms of degree are inherently indefinite.”); see also Nautilus, 134 S. Ct. at
16
2129 (“The definiteness requirement . . . mandates clarity, while recognizing that absolute
precision is unattainable.”).
Nonetheless, “[t]he claims, when read in light of the specification and the prosecution
history, must provide objective boundaries for those of skill in the art.” Interval Licensing, 766
F.3d at 1371. “[A] term of degree fails to provide sufficient notice of its scope if it depends on the
unpredictable vagaries of any one person’s opinion.” Id. (citation and internal quotation marks
omitted).
Claim 12 of the ’971 Patent, for example, recites (emphasis added):
12. A quality of service (QoS) aware, wireless communications system comprising:
a wireless access point base station coupled to a first data network;
one or more host workstations coupled to said first data network;
one or more wireless network stations in wireless communication with said
wireless access point base station over a shared wireless network using a packetcentric protocol; and
a scheduler that allocates resources of said shared wireless network among
said wireless network stations to optimize end-user quality of service (QoS) for an
Internet Protocol (IP) flow, wherein said IP flow is associated with at least one of
a latency-sensitive and a jitter-sensitive application;
wherein said scheduler comprises assigning means for assigning future slots
of a transmission frame to a portion of said IP flow in said transmission frame for
transmission over said shared wireless network,
wherein said assigning means comprises:
means for applying an advanced reservation algorithm[;]
means for reserving a first slot for a first data packet of an Internet Protocol
(IP) flow in a future transmission frame based on said algorithm[;]
means for reserving a second slot for a second data packet of said IP flow
in a transmission frame subsequent in time to said future transmission frame based
on said algorithm,
wherein said second data packet is placed in said second slot in an
isochronous manner to the placing of said first data packet in said first slot.
On one hand, the specification refers to “optimal” performance in terms of handling
communications in ways that depend on the types of data being communicated:
Simply providing “adequate” bandwidth is not a sufficient QoS mechanism for
packet-switched networks, and certainly not for wireless broadband access systems.
Although some IP-flows are “bandwidth-sensitive,” other flows are
17
latency- and/or jitter-sensitive. Real time or multimedia flows and applications
cannot be guaranteed timely behavior by simply providing excessive bandwidth,
even if it were not cost-prohibitive to do so. It is desirable that QoS mechanisms
for an IP-centric wireless broadband access system recognize the detailed flow-byflow requirements of the traffic, and allocate system and media resources necessary
to deliver these flows in an optimal manner.
***
The wireless transmission frames in each direction are constructed in a manner
dictated by the individual QoS requirements of each IP flow. By using QoS
requirements to build the wireless transmission frames, optimal QoS performance
can result over the entire range of applications being handled by the system. For
example, latency and jitter sensitive IP telephony, other H.323 compliant IP
streams, and real-time audio and video streams can be given a higher priority for
optimal placement in the wireless transmission frames. On the other hand,
hypertext transport protocol (HTTP) traffic, such as, e.g., initial web page
transmissions, can be given higher bandwidth reservation priorities for that
particular application task. Other traffic without latency, jitter, or bandwidth
requirements such as, e.g., file transfer protocol (FTP) file downloads, email
transmissions, can be assigned a lower priority for system resources and placement
in the wireless transmission frame.
’206 Patent at 13:16–27, 21:41–58 (emphasis added); see id. at 57:5–10 (“[T]he present
invention’s reservation protocol with a dynamically adjustable number of contention subslots and
explicit wireless base station reservation grants, allows a more optimal means of providing for the
allocation of wireless, such as, e.g., radio, bandwidth in response to QoS requirements of IP-flows
than any prior method.”); see also id. at 58:45–50 (“For example, suppose the data packets of class
1 packet flow queue 1324 require jitter-free and latency-free delivery, i.e., delivery of packets must
be at constant time intervals and in real-time. Packet flow queue 1324 creates, e.g., 4 equal time
spaced slot reservations in future frames . . . .”); id. at 58:28–60:28, 62:31–48. Plaintiff has also
argued that the disclosures in the specification, as well as the recitals of “IP flows,” are directed to
network operators rather than end users. See id. at 14:21‒25 (“simplify the operation and
administration of the QoS mechanism”); 51:14‒16 (“By placing all scheduling function at the
18
wireless base station 302, overall system quality of service can be optimized by centralizing the
control of scheduling.”).
On the other hand, the specification further explains that optimizing quality of service
(“QoS”) ultimately depends on how “the user defines it”:
QoS can be a relative term, finding different meanings for different users. A casual
user doing occasional web browsing, but no file transfer protocol (FTP) file
downloads or real time multimedia sessions may have different a different [sic]
definition of QoS than a power user doing many FTP file downloads of large
database or financial files, frequent H.323 video conferencing and IP telephony
calls. Also, a user can pay a premium rate (i.e. a so-called service level agreement
(SLA)) for high network availability, low latency, and low jitter, while another user
can pay a low rate for occasional web surfing only, and on weekends only.
Therefore, perhaps it is best to understand QoS as a continuum, defined by what
network performance characteristic is most important to a particular user and the
user’s SLA. Maximizing the end-user experience is an essential component of
providing wireless QoS.
***
QoS can be thought of as a mechanism to selectively allocate scarce networking,
transmission and communications resources to differentiated classes of network
traffic with appropriate levels of priority. Ideally, the nature of the data traffic, the
demands of the users, the conditions of the network, and the characteristics of the
traffic sources and destinations all modify how the QoS mechanism is operating at
any given instant. Ultimately, however, it is desirable that the QoS mechanism
operate in a manner that provides the user with optimal service, in whatever
manner the user defines it.
Id. at 11:41–56, 12:7–17 (emphasis added); see also id. at 13:45–48 (“The nature of the data
application itself and the desired end-user experience then can provide the most reliable criteria
for the QoS mechanism.”).
On balance, “to optimize end-user quality of service (QoS)” lacks sufficient “objective
boundaries” for those of skill in the art to understand the scope of the claims, even when considered
in light of the specification. Interval Licensing, 766 F.3d at 1371.
19
The various general disclosures regarding QoS cited by Plaintiff do not compel otherwise.
See, e.g., ’206 Patent at 10:61–11:54, 12:7–10, 13:34–48, 14:9–25 (“differing levels of system
resources can be allocated”), 32:4–12, 39:7–20, 40:59–41:3.
The prosecution history cited by Plaintiff (regarding United States Patent Application No.
09/349,478, cited in the patents-in-suit) is likewise unpersuasive:
The present invention optimizes end-user quality of service (QoS) by differentiating
between types of traffic or service types so that differing levels of system resources
can be allocated to these different types. . . . By creating a finite number of discrete
classes of service, multiple IP flows can be consolidated and handled with a given
set of QoS parameters by the QoS mechanisms.
(See Dkt. No. 111, Ex. 5, Mar. 27, 2002 Amendment and Reply Under 37 C.F.R. § 1.111 and 1.121
at 13 (emphasis in original); see id. at 13–14 (“End-user quality of service (QoS) is not optimized
in [the] Meier [reference] because differentiating between types of traffic or service types is
required in order to optimize end-user quality of service (QoS).”) (emphasis omitted).)
Here, too, although the patentee referred to differentiating between different types of data
traffic, the patentee did not define or sufficiently explain the meaning of “optimize,” especially in
the context of “end-user” QoS. To the extent that Plaintiff is arguing that “to optimize” means
merely to treat differently, this argument is unavailing. The prosecution history set forth above
indicates that differentiating is necessary in order to optimize, but this does not amount to an
explanation of what “optimize” means. Further, dependent Claim 121 of the ’206 Patent, in which
one of the disputed terms appears, depends from Claim 109 of the ’206 Patent, which separately
recites “classifying a plurality of packets according to end-user quality of service requirements of
said plurality of packets.” Claim 1 of the ’206 Patent is similar in this regard. See Phillips, 415
F.3d at 1314 (“Other claims of the patent in question, both asserted and unasserted, can also be
valuable sources of enlightenment as to the meaning of a claim term.”). The above-cited
20
disclosures demonstrate that to “optimize” means something more than merely differentiating or
classifying, but the meaning is left unclear.
Finally, Plaintiff has asserted that Defendants have failed to meet their burden to “provide[]
a factual record” by submitting an expert declaration as to the claims here at issue. (Dkt. No. 111
at 13.) The Court finds that Defendants’ expert has presented relevant opinions that are persuasive
and that thus provide additional support for the Court’s finding that the recital of “optimize,” as
used in the claims here at issue, renders the claims indefinite. (See Dkt. No. 118, Ex. 1, Aug. 8,
2018 Rubin Decl. ¶ 53 (“merely distinguishing one type of traffic from another does not inform
how to optimize among the competing needs of that traffic”); see also id. ¶¶ 22–25, 33, 35–36,
38–54.) The contrary opinions of Plaintiff’s expert are unpersuasive. (See Dkt. No. 111, Ex. 9,
July 10, 2018 Williams Decl. ¶ 28 (“parameters are optimized by a network operator through the
adjustment of defined end-user QoS parameters for a particular IP flow such as packet delay
budget, jitter, error rate, etc.”); see also id. ¶¶ 13–29; Dkt. No. 126, Ex. 10, 2d Williams Decl. ¶¶
5–16.) For example, Plaintiff’s expert opines: “In a telecommunications environment where there
are multiple users and multiple IP flows competing for limited network resources, the network
operator needs to make trade-offs in the allocation of those resources.” (Id. ¶ 8.) Plaintiff has
failed to demonstrate that such “trade-offs,” in the context of optimizing end-user QoS, would be
anything other than subjective. See Datamize, 417 F.3d at 1350–51.3
3
On the eve of the September 5, 2018 hearing, the Federal Circuit affirmed an indefiniteness
finding by the District of Delaware as to the term “allocating means for allocating resources to
said IP flow . . . so as to optimize end user application IP QoS requirements of said software
application” in Claim 20 of related United States Patent No. 6,640,248. See Intellectual Ventures I,
LLC v. T-Mobile USA, Inc., 902 F.3d 1372, 1381 (Fed. Cir. 2018), affirming Intellectual Ventures
I, LLC v. AT&T Mobility LLC, Nos. 13-1668, 13-1669, 13-1670, 13-1671, 13-1672, 14-1229, 141230, 14-1231, 14-1232, 14-1233, 2016 WL 4363485 (D. Del. Aug. 12, 2016).
At the September 5, 2018 hearing, Plaintiff urged that definiteness must be evaluated on a
claim-by-claim basis, and the Federal Circuit found indefiniteness only as to one particular claim
21
The Court therefore hereby finds that “to optimize end-user quality of service (QoS) for
an Internet Protocol (IP) flow,” “so as to optimize end-user quality of service (QoS)
associated with said IP flow,” and “so as to optimize end-user internet protocol (IP) quality
of service (QoS)” in Claim 12 of the ’971 Patent and Claims 1, 19, and 121 of the ’206 Patent are
indefinite.
in a different patent. Plaintiff also submitted that Defendants presented their indefiniteness
challenge only as to Claim 12 of the ’971 Patent and Claims 1, 19, and 121 of the ’206 Patent.
Plaintiff argued that dependent claims may include limitations that provide reasonable certainty.
See, e.g., Halliburton Energy Servs., Inc. v. M-I, LLC, 514 F.3d 1244, 1250 n.2 (Fed. Cir. 2008);
Signal IP v. Am. Honda Motor Co., Inc., No. 14-CV-02454, 2015 WL 5768344, at *35 n.15 (C.D.
Cal. Apr. 17, 2015). Defendants responded that the onus was on Plaintiff to demonstrate that any
dependent claims include limitations that overcome the indefiniteness arguments presented as to
particular claims that Defendants have challenged.
At the September 5, 2018 hearing, the Court instructed the parties to file proposals for
addressing this dispute. After the parties filed Notices (Dkt. Nos. 147, 148), the Court set a briefing
schedule for a motion for summary judgment. (Dkt. No. 149, Sept. 10, 2018 Order for Expedited
Briefing.) Defendants’ filed a Motion for Partial Summary Judgment That Asserted Claims
Reciting the Indefinite “Optimize” Term Are Invalid as Indefinite. (Dkt. No. 155.) The Court
addresses that motion by separate Order.
22
E. “assigning means for assigning future slots of a transmission frame to a portion of said
IP flow in said transmission frame for transmission over said shared wireless network”
Plaintiff’s Proposed Construction
Defendants’ Proposed Construction
Means-plus-function limitation under § 112 Function:
¶ 6.
“assigning future slots of a transmission
frame to a portion of said IP flow in said
Function:
transmission frame for transmission over said
“assigning future slots of a transmission shared wireless network”
frame to a portion of said IP flow in said
transmission frame over said shared wireless Structure:
network”
MAC downlink subframe scheduler 1566
or MAC uplink subframe scheduler 1666,
Structure:
implementing an algorithm that assigns future
4
slots to a portion of an IP flow based on the
MAC subframe schedulers 1566 or 1666
priority of the IP flow, as described at ’971
Patent 61:65–62:115
(Dkt. No. 110, Ex. B at 8; Dkt. No. 111 at 14; Dkt. No. 118 at 19; Dkt. No. 128-1 at 10.) The
parties submit that this term appears in Claim 12 of the ’971 Patent. (Dkt. No. 110, Ex. B at 8.)
(1) The Parties’ Positions
Plaintiff argues that the specification citation proposed by Defendants “would unduly limit
the scope of the assigning means and potentially conflict with the remaining three means
elements.” (Dkt. No. 111 at 15.) Further, Plaintiff argues that Defendants’ proposal should be
rejected because “[f]ocusing exclusively on the IP flow rather than on the data packets and the IP
flow associated with these packets is incorrect.” (Id. at 16.)
4
Plaintiff previously proposed: “Plain meaning, as this term is not governed by 35 U.S.C. § 112 ¶
6, or, should the Court find this term to be governed by § 112 ¶ 6: / Function: assigning future slots
of a transmission frame to a portion of said IP flow in said transmission frame for transmission
over said shared wireless network / Structure: MAC subframe schedulers 1566 or 1666.” (Dkt.
No. 110, Ex. B at 8.)
5
Defendants previously proposed: “downlink scheduler 1566 or uplink scheduler 1666,
implementing an algorithm that assigns future slots to a portion of an IP flow based on the priority
of the IP flow, as described at ’971 Patent 61:65‒62:11.” (Dkt. No. 110, Ex. B at 8.)
23
Defendants respond that “IV has failed to provide any algorithm in its proposed structure
and neglected to provide any reasoning for why an algorithm is not required. Here, the mere
disclosure of a generic scheduler that runs on a general purpose processor along with an
identification of the location of the subframe being scheduled (i.e., the MAC) does not disclose
any algorithm as required by Federal Circuit precedent.” (Dkt. No. 118 at 19.)
Plaintiff replies that “the uplink and downlink schedulers are not general purpose
computers” and therefore the corresponding structure need not include an algorithm. (Dkt.
No. 126 at 8.)
(2) Analysis
Title 35 U.S.C. § 112, ¶ 6 provides: “An element in a claim for a combination may be
expressed as a means or step for performing a specified function without the recital of structure,
material, or acts in support thereof, and such claim shall be construed to cover the corresponding
structure, material, or acts described in the specification and equivalents thereof.”
“In a means-plus-function claim in which the disclosed structure is a computer, or
microprocessor, programmed to carry out an algorithm, the disclosed structure is not the general
purpose computer, but rather the special purpose computer programmed to perform the disclosed
algorithm.” WMS Gaming Inc. v. Int’l Gaming Tech., 184 F.3d 1339, 1349 (Fed. Cir. 1999). The
parties dispute whether the “MAC downlink subframe scheduler 1566” and the “MAC uplink
subframe scheduler 1666” are general purpose computers such that an algorithm is required as part
of the corresponding structure.
The specification discloses that the “MAC downlink subframe scheduler 1566” is a
“processor module”:
MAC downlink subframe scheduler 1566 is a processor module that takes the
packets queued in class queues 1564a-1564f, and can make frame slot reservations
24
to fill up subframes 1568a-1568k based on priorities 1570, 1572 and 1574, which
is a variable number of frames.
’971 Patent at 67:36–40; see id. at 66:10–11 (“MAC downlink subframe scheduler module 1566”).
The specification also refers to “MAC uplink subframe scheduler module 1666.” Id. at 71:66–67
(emphasis added).
Nonetheless, the claim in which this disputed term appears already separately recites
several additional limitations as to what “said assigning means comprises” (emphasis added):
12. A quality of service (QoS) aware, wireless communications system comprising:
a wireless access point base station coupled to a first data network;
one or more host workstations coupled to said first data network;
one or more wireless network stations in wireless communication with said
wireless access point base station over a shared wireless network using a packetcentric protocol; and
a scheduler that allocates resources of said shared wireless network among
said wireless network stations to optimize end-user quality of service (QoS) for an
Internet Protocol (IP) flow, wherein said IP flow is associated with at least one of
a latency-sensitive and a jitter-sensitive application;
wherein said scheduler comprises assigning means for assigning future slots
of a transmission frame to a portion of said IP flow in said transmission frame for
transmission over said shared wireless network,
wherein said assigning means comprises:
means for applying an advanced reservation algorithm[;]
means for reserving a first slot for a first data packet of an Internet Protocol
(IP) flow in a future transmission frame based on said algorithm[;]
means for reserving a second slot for a second data packet of said IP flow
in a transmission frame subsequent in time to said future transmission frame based
on said algorithm,
wherein said second data packet is placed in said second slot in an
isochronous manner to the placing of said first data packet in said first slot.
The Court therefore rejects Defendants’ argument that the corresponding structure must
include an algorithm from the specification.
Having thus resolved the parties’ dispute, and the parties being otherwise in agreement as
to the proper construction, the Court hereby finds that “assigning means for assigning future
slots of a transmission frame to a portion of said IP flow in said transmission frame for
25
transmission over said shared wireless network” is a means-plus-function term, the claimed
function is “assigning future slots of a transmission frame to a portion of said IP flow in said
transmission frame for transmission over said shared wireless network,” and the
corresponding structure is “MAC downlink subframe scheduler 1566 or MAC uplink
subframe scheduler 1666; and equivalents thereof.”
F. “means for applying an advanced reservation algorithm”
Plaintiff’s Proposed Construction
Defendants’ Proposed Construction
Means-plus-function limitation under § 112 Function:
“applying an advanced reservation
¶ 6.
algorithm”
Function:
“applying an advanced reservation Structure:
algorithm”
MAC downlink subframe scheduler 1566
or MAC uplink subframe scheduler 1666
Structure:
implementing an algorithm that determines the
MAC subframe schedulers 1566 or 1666 latency and jitter sensitivity of flows and then
configured to assign future slots to data determines how to assign slots based on that
packets based on the priority of the IP data determination (e.g., periodically or not, with
flow with which the packet is associated, as what period), as described at ’971 Patent
described at ’971 Patent 23:14–35, 61:35– 51:11–23, 61:6–16, 61:65–62:7, 62:32–37,
62:56, 63:47–57, 66:7–15, 67:36–50, 71:63– Fig. 147
72:04, 72:53–66, 73:27–40, Figs. 14, 15A,
15B, 16A, and 16B6
(Dkt. No. 111 at 16; Dkt. No. 118 at 19–20; Dkt. No. 128-1 at 11–12.) The parties submit that this
term appears in Claim 12 of the ’971 Patent. (Dkt. No. 110 Ex. B at 8.)
6
Plaintiff previously proposed: “Plain meaning, as this term is not governed by 35 U.S.C. § 112 ¶
6 . . . .” (Dkt. No. 110, Ex. B at 8–9.)
7
Defendants previously proposed: “downlink scheduler 1566 or uplink scheduler 1666
implementing an algorithm that determines the latency and jitter sensitivity of flows and then
determines how to assign slots based on that determination (e.g., periodically or not, with what
period), as described at ’971 Patent 51:11‒23, 61:6‒16, 61:65‒62:7, 62:32‒37, Fig. 14.” (Dkt. No.
110, Ex. B at 8–9.)
26
(1) The Parties’ Positions
Plaintiff argues, as to Defendants’ proposed algorithm: “This construction is not taken from
the specification and has no support in the intrinsic evidence. It seeks to narrow the claim scope
to a single embodiment and should be rejected.
Nothing in the specification requires the
reservation algorithm to determine any latency or jitter sensitivities.” (Dkt. No. 111 at 17.)
Plaintiff submits that Plaintiff’s proposal, by contrast, “is taken verbatim from the specification.”
(Id. at 16 (citing ’971 Patent at 61:65–62:1).)
Defendants respond that “IV ignores . . . the further detail that the specification provides
regarding how the advanced reservation algorithm actually determines the priority of the IP data
flow and assigns slots based on those priorities.” (Dkt. No. 118 at 20.)
Plaintiff replies that “Defendants seek to limit the priority determination to latency and
jitter sensitivity,” despite “numerous priorities identified in the patent specification.” (Dkt.
No. 126 at 8–9.)
(2) Analysis
The parties agree that the corresponding structure for the “means for applying an advanced
reservation algorithm” should include citation to configuration details set forth in the specification.
The parties dispute merely which details should be included.
Under section 112, paragraph 6, structure disclosed in the specification is
“corresponding” structure “only if the specification or the prosecution history
clearly links or associates that structure to the function recited in the claim.”
B. Braun Med., Inc. v. Abbott Labs., 124 F.3d 1419, 1424, 43 USPQ2d 1896, 1900
(Fed. Cir. 1997). A court may not import into the claim features that are
unnecessary to perform the claimed function. Acromed Corp. v. Sofamor Danek
Group, Inc., 253 F.3d 1371, 1382, 59 USPQ2d 1130, 1138 (Fed. Cir. 2001).
Northrup Grumman Corp. v. Intel Corp., 325 F.3d 1346, 1352 (Fed. Cir. 2003) (citations omitted).
27
Here, the parties have cited various disclosures in the specification, as noted above, but the
portion that the specification “clearly links or associates . . . to the function recited in the claim”
(id.) appears in a series of paragraphs that explain “[i]n the present invention, an advanced
reservation algorithm assigns future slots to data packets based on the priority of the IP data flow
with which the packet is associated.” ’971 Patent at 61:65–62:56.
Plaintiff’s reply brief argues that the corresponding structure should include the “priorities”
disclosed in the ’971 Patent at 51:56–52:20. (See Dkt. No. 126 at 8–9.) This disclosure does not
appear among the disclosures set forth in Plaintiff’s portion of the parties’ pre-briefing Joint Claim
Construction and Prehearing Statement, in Plaintiff’s opening brief, or in Plaintiff’s portion of the
parties’ post-briefing Joint Claim Construction Chart. (See Dkt. No. 110, Ex. B at 8–9; see also
Dkt. No. 111 at 16; Dkt. No. 128-1 at 11–12.) Nonetheless, this disclosure need not be included
as part of the express corresponding structure because the disclosure in the ’971 Patent at 61:65–
62:56 states that “[e]xemplary priorities are described above with respect to FIGS. 8A and 8B”
(which is set forth in the disclosure in 51:56–52:20). ’971 Patent at 62:1‒2.
Nonetheless, to whatever extent Defendants are arguing that the corresponding structure is
limited to latency sensitivity and jitter sensitivity (let alone determining values for latency
sensitivity and jitter sensitivity), no such disclosure is apparent, and the Court hereby expressly
rejects any such requirement.
The Court accordingly hereby finds that “means for applying an advanced reservation
algorithm” is a means-plus-function term, the claimed function is “applying an advanced
reservation algorithm,” and the corresponding structure is “MAC downlink subframe
scheduler 1566 or MAC uplink subframe scheduler 1666 configured as set forth in the
’971 Patent at 61:65–62:56; and equivalents thereof.”
28
G. “means for reserving a first slot for a first data packet of an Internet Protocol (IP) flow
in a future transmission frame based on said algorithm”
Plaintiff’s Proposed Construction
Defendants’ Proposed Construction
Means-plus-function limitation under § 112 Means-plus-function limitation under § 112
¶ 6.
¶ 6.
Function:
Function:
“reserving a first slot for a first data packet
“reserving a first slot for a first data packet
of an Internet Protocol (IP) flow in a future of an Internet Protocol (IP) flow in a future
transmission frame based on said algorithm”
transmission frame based on said algorithm”
Structure:
MAC subframe schedulers 1566 or 1666
configured to reserve slots in a future
transmission frame in accordance with one or
more of the patterns shown in Figure 14, by
reserving a slot one or more frames in the
future, or as described at ’971 Patent 23:14–35,
61:35–62:56, 63:47–57, 66:7–15, 67:36–50,
71:63–72:04, 72:53–66, 73:27–40, Figs. 14,
15A, 15B, 16A, and 16B8
Structure:
MAC downlink subframe scheduler 1566
or MAC uplink subframe scheduler 1666
implementing an algorithm for assigning a first
future slot that is at least one frame in the
future from the current frame based on the
determination by the reservation algorithm of
the latency- and jitter-sensitivity of the flows,
as described at ’971 Patent 62:7–17, 62:46–54,
67:36–47, 73:27–37, Fig. 149
(Dkt. No. 110, Ex. B at 9–10; Dkt. No. 111 at 17–18; Dkt. No. 118 at 21; Dkt. No. 128-1 at 12–
13.) The parties submit that this term appears in Claim 12 of the ’971 Patent. (Dkt. No. 110, Ex.
B at 9.)
(1) The Parties’ Positions
Plaintiff argues that whereas Plaintiff’s proposal is “fully supported by the specification . . .
without any extraneous phrases or unnecessary confusion,” “Defendants once again attempt to add
8
Plaintiff previously proposed: “Plain meaning, as this term is not governed by 35 U.S.C. § 112
¶ 6 . . . .” (Dkt. No. 110, Ex. B at 9–10.)
9
Defendants previously proposed: “downlink scheduler 1566 or uplink scheduler 1666
implementing an algorithm for assigning a first future slot that is at least one frame in the future
from the current frame based on the determination by the reservation algorithm of the latency- and
jitter-sensitivity of the flows, as described at ’971 Patent 62:7–17, 62:46–54, 67:36–47, 73:27–37,
Fig. 14.” (Dkt. No. 110, Ex. B at 9–10.)
29
limitations to the structure that are both confusing and unsupported by the specification.” (Dkt.
No. 111 at 18.)
Defendants respond that “[t]he ’971 Patent explains that once the advanced algorithm
determines the sensitivities and priorities of an IP flow, and determines generally how to assign
slots, the algorithm selects specific slots for the current frame and frames that will occur in the
future, relative to the current frame . . . .” (Dkt. No. 118 at 21 (citing ’971 Patent at 61:40–46,
62:7–17).)
Plaintiff replies: “The ‘means for reserving’ incorporates its own algorithm—‘said
algorithm,’ i.e., the advanced reservation algorithm—from the prior element. Accordingly, the
schedulers when running the advanced reservation algorithm are the corresponding structure.”
(Dkt. No. 126 at 9.)
(2) Analysis
This disputed term presents substantially the same issues as the term “means for applying
an advanced reservation algorithm,” addressed above. The Court reaches the same conclusions
for the same reasons.
The claimed function in this disputed term contains no “current frame” limitation, but at
the September 5, 2018 hearing, Defendants urged that the frame that is going to be transmitted
next is referred to in the ’971 Patent as the “current” frame. See ’971 Patent at 61:40‒46, Fig. 14.
On balance, Defendants’ proposed explanation regarding the “current frame” is potentially
confusing and is unnecessary in light of the context provided by the claim language and by the
disclosure cited in the Court’s construction.
The Court accordingly hereby finds that “means for reserving a first slot for a first data
packet of an Internet Protocol (IP) flow in a future transmission frame based on said
30
algorithm” is a means-plus-function term, the claimed function is “reserving a first slot for a
first data packet of an Internet Protocol (IP) flow in a future transmission frame based on
said algorithm,” and the corresponding structure is “MAC downlink subframe scheduler 1566
or MAC uplink subframe scheduler 1666 implementing the algorithms set forth in the ’971
Patent at 61:65–62:56; and equivalents thereof.”
H. “means for reserving a second slot for a second data packet of said IP flow in a
transmission frame subsequent in time to said future transmission frame based on said
algorithm”
Plaintiff’s Proposed Construction
Defendants’ Proposed Construction
Means-plus-function limitation under § 112 Means-plus-function limitation under § 112
¶ 6.
¶ 6.
Function:
“reserving a second slot for a second data
packet of said IP flow in a transmission frame
subsequent in time to said future transmission
frame based on said algorithm”
Function:
“reserving a second slot for a second data
packet of said IP flow in a transmission frame
subsequent in time to said future transmission
frame based on said algorithm”
Structure:
MAC subframe schedulers 1566 or 1666
configured to reserve slots in a second future
transmission frame, in accordance with one or
more of the patterns shown in Figure 14, by
reserving a slot two or more frames in the
future, or as described at ’971 Patent 23:14–35,
61:35–62:56, 63:47–57, 66:7–15, 67:36–50,
71:63–72:04, 72:53–66, 73:27–40, Figs. 14,
15A, 15B, 16A, 16B10
Structure:
MAC downlink subframe scheduler 1566
or MAC uplink subframe scheduler 1666
implementing an algorithm for assigning a
second future slot in a frame that is at least two
frames in the future from the current frame
based on the determination by the reservation
algorithm of the latency- and jitter-sensitivity
of the flows, as described at ’971 Patent 62:7–
17, 62:46–54, 67:36–47, 73:27–37, Fig. 1411
10
Plaintiff previously proposed: “Plain meaning, as this term is not governed by 35 U.S.C. § 112
¶ 6 . . . .” (Dkt. No. 110, Ex. B at 10–11.)
11
Defendants previously proposed: “downlink scheduler 1566 or uplink scheduler 1666
implementing an algorithm for assigning a second future slot in a frame that is at least two frames
in the future from the current frame based on the determination by the reservation algorithm of the
latency- and jitter-sensitivity of the flows, as described at ’971 Patent 62:7–17, 62:46–54, 67:36–
47, 73:27–37, Fig. 14.” (Dkt. No. 110, Ex. B at 10–11.)
31
(Dkt. No. 110, Ex. B at 10–11; Dkt. No. 111 at 18–19; Dkt. No. 118 at 21; Dkt. No. 128-1 at 14–
15.) The parties submit that this term appears in Claim 12 of the ’971 Patent. (Dkt. No. 110, Ex.
B at 10.)
(1) The Parties’ Positions
Plaintiff argues that “for the reasons described above [as to the ‘means for reserving a first
slot . . .’], Defendants’ proposed construction improperly and incorrectly incorporates a
determination of latency- and jitter-sensitivity as well as introducing the term ‘current frame’
which will confuse a jury.” (Dkt. No. 111 at 19.)
Defendants respond as to this term together with the “means for reserving a first slot” term
addressed above. (See Dkt. No. 118 at 21–22.)
Plaintiff replies as to this term together with the “means for reserving a first slot” term
addressed above. (See Dkt. No. 126 at 9.)
(2) Analysis
This disputed term presents substantially the same issues as the term “means for reserving
a first slot for a first data packet of an Internet Protocol (IP) flow in a future transmission frame
based on said algorithm,” addressed above. The Court reaches the same conclusions for the same
reasons.
The Court accordingly hereby finds that “means for reserving a second slot for a second
data packet of said IP flow in a transmission frame subsequent in time to said future
transmission frame based on said algorithm” is a means-plus-function term, the claimed
function is “reserving a second slot for a second data packet of said IP flow in a transmission
frame subsequent in time to said future transmission frame based on said algorithm,” and
the corresponding structure is “MAC downlink subframe scheduler 1566 or MAC uplink
32
subframe scheduler 1666 implementing the algorithms set forth in the ’971 Patent at 61:65–
62:56; and equivalents thereof.”
I. “means for taking into account service level agreement (SLA) based priorities for said IP
flow”
Plaintiff’s Proposed Construction
Defendants’ Proposed Construction
Means-plus-function limitation under § 112 Means-plus-function limitation under § 112
¶ 6.
¶ 6.
Function:
Function:
“taking into account service level
“taking into account service level
agreement (SLA) based priorities for said IP agreement (SLA) based priorities for said IP
flow”
flow”
Structure:
Downlink scheduler 604/1566 or uplink
scheduler 634/1666 configured to use
information from SLA priority data table 1570
to affect the queueing function and provide
different service levels to users12
Structure:
downlink scheduler 604/1566 or uplink
scheduler 634/1666 implementing an
algorithm that increases or decreases queuing
priority of an IP flow based on the service level
agreement of the user associated with the IP
flow, as described at ’971 Patent 53:49–57,
53:34–36, 66:57–63.
(Dkt. No. 110, Ex. B at 11; Dkt. No. 111 at 19–20; Dkt. No. 118 at 22; Dkt. No. 128-1 at 15–16.)
The parties submit that this term appears in Claim 18 of the ’971 Patent. (Dkt. No. 110, Ex. B at
11.)
(1) The Parties’ Positions
Plaintiff argues that whereas Plaintiff’s proposed construction “is again taken directly from
the specification,” “Defendants’ additional proposed structure excludes all but one embodiment
and is therefore improper.” (Dkt. No. 111 at 20 (citing ’971 Patent at 63:47–56).)
12
Plaintiff previously proposed: “Plain meaning, as this term is not governed by 35 U.S.C. § 112
¶ 6 . . . .” (Dkt. No. 110, Ex. B at 11.)
33
Defendants respond that “Defendants’ proposed construction identifies the only algorithm
described in the patent for taking into account SLA based priorities.” (Dkt. No. 118 at 22 (citing
’971 Patent at 66:59–63).)
Plaintiff replies that “IV’s construction correctly identifies the disclosed structure,
including that the scheduler is configured to apply a set of rules (‘downlink flow scheduler 604 . . .
based on a set of rules, schedules the data packets’) that operate upon specific data (‘the rules can
be determined by inputs to the . . . scheduler from . . . a service level agreement priority data table
1570’).” (Dkt. No. 126 at 9 (citing ’971 Patent at 63:47–56).)
(2) Analysis
The specification discloses:
Downlink flow scheduler 604 places the data packets of an IP data flow into a class
queue, and based on a set of rules, schedules the data packets for transmission over
the wireless medium to a subscriber CPE station using, e.g., an advanced
reservation algorithm. The rules can be determined by inputs to the downlink flow
scheduler from a hierarchical class-based priority processor module 1574, a virtual
private network (VPN) directory enabled (DEN) data table 1572, and a service level
agreement (SLA) priority data table 1570.
’971 Patent at 63:47–56 (emphasis added); see also id. at 53:49–57, 66:57–63.
This disclosure links the claimed function to the structure of SLA priority data table 1570.
No additional structure is necessary for performing the claimed function (other than the agreedupon “downlink scheduler 604/1566 or uplink scheduler 634/1666”). See Northrup Grumman,
325 F.3d at 1352 (“A court may not import into the claim features that are unnecessary to perform
the claimed function.”). The disclosures cited by Defendants do not demonstrate that “an
algorithm that increases or decreases queuing priority of an IP flow” is necessary for performing
the claimed function of merely “taking into account” SLA priorities.
34
The Court therefore hereby finds that “means for taking into account service level
agreement (SLA) based priorities for said IP flow” is a means-plus-function term, the claimed
function is “taking into account service level agreement (SLA) based priorities for said IP
flow,” and the corresponding structure is “downlink scheduler 604/1566 or uplink scheduler
634/1666, and service level agreement (SLA) priority data table 1570; and equivalents
thereof.”
J. “the analyzed contents” and “the analyzed packet contents”
Plaintiff’s Proposed Construction
Defendants’ Proposed Construction
Plain meaning, “the portion of the packets “analyzed contents of the packets to be
previously analyzed”
communicated over the shared wireless
bandwidth in the downlink direction”
(Dkt. No. 110, Ex. B at 12; Dkt. No. 111 at 21; Dkt. No. 118 at 23; Dkt. No. 128-1 at 18–20.) The
parties submit that these terms appear in Claims 1 and 12 of the ’517 Patent. (Dkt. No. 110, Ex.
B at 12.)
(1) The Parties’ Positions
Plaintiff argues that “Defendants’ proposed construction is unhelpful and it offers nothing
beyond a repetition of the claim language.” (Dkt. No. 111 at 22.)
Defendants respond that “[t]he issue regarding these terms is antecedent basis,” and “the
phrases ‘the analyzed contents’ and ‘the analyzed packet contents’ refer to the same contents of
the same packets that previously were analyzed.” (Dkt. No. 118 at 23.)
Plaintiff replies, as to the phrase “to be communicated over the shared wireless bandwidth
in the downlink direction” proposed by Defendants, that “[t]hese words appear elsewhere in the
claims, and Defendants do not explain why repeating the words is necessary.” (Dkt. No. 126 at
10.)
35
(2) Analysis
Claim 1 of the ’517 Patent, for example, recites (emphasis added):
1. A method for allocating a shared wireless bandwidth in a packet-centric wireless
point to multi-point telecommunications system, the method comprising:
analyzing contents of packets to be communicated over the shared wireless
bandwidth in a downlink direction from a wireless base station to at least one
customer premises equipment (CPE) station;
analyzing reservation requests for packets to be communicated in the
u[p]link direction from the at least one CPE station to the wireless base station,
wherein each reservation request comprises a subscriber identifier and at least one
other subscriber attribute, wherein the analyzing includes processing the subscriber
identifier and the at least one other subscriber attribute to schedule packets in the
uplink direction; and
allocating the shared wireless bandwidth between the wireless base station
transmitting in the downlink direction and the at least one CPE station transmitting
in the uplink direction based on the analyzed contents and the analyzed reservation
requests, wherein allocating the shared bandwidth comprises:
assigning slots in a frame to the at least one CPE station; and
communicating the assigned slots to the at least one CPE station
in a reservation request acknowledgement section of a
frame.
Claim 12 of the ’517 Patent is similar in relevant part except that it recites “the analyzed
packet contents” rather than “the analyzed contents” (emphasis added):
12. A wireless base station comprising:
a first interface configured to couple to a wired data network;
a second interface configured to communicate on a wireless network; and
a controller coupled to the first interface and the second interface, wherein
the controller is configured to receive reservation requests from one or more
customer premises equipment (CPE) stations via the second interface, wherein each
reservation request corresponds to a packet to be transmitted in an uplink direction
from the at least one CPE station to the wireless base station, and wherein each
reservation request comprises a subscriber identifier and at least one other
subscriber attribute, and wherein the controller is configured to receive packets
from the wired data network via the first interface to be communicated in a
downlink direction from the wireless base station to the at least one CPE station,
and wherein the controller is configured to analyze contents of the packets received
from the first interface and to analyze the reservation requests, and wherein the
controller is configured to allocate wireless bandwidth between the uplink direction
and the downlink direction responsive to the analyzed packet contents and the
analyzed reservation requests, and wherein the controller is configured to allocate
slots in a frame to the reservation requests responsive to the allocated bandwidth,
36
and wherein the controller is configured to communicate the allocated slots in a
reservation request acknowledgement section of a frame.
The antecedent basis for the disputed terms is clear on the face of these claims. Although
the parties appear to be largely in agreement, construction is appropriate to ensure that any
remaining dispute is fully resolved as well as to prevent confusion. In particular, the recital of an
intervening “analyzing . . .” step in Claim 1 and an intervening “analyze” limitation in Claim 12
(reproduced above) might give rise to confusion as to the proper antecedent basis. The Court
accordingly hereby construes these disputed terms as set forth in the following chart:
Term
“the analyzed contents”
(’517 Patent, Claim 1)
“the analyzed packets contents”
(’517 Patent, Claim 12)
Construction
This term refers back to the limitation of
“analyzing contents of packets to be
communicated over the shared wireless
bandwidth in a downlink direction from a
wireless base station to at least one customer
premises equipment (CPE) station”
This term refers back to the limitation of
“analyze contents of the packets received
from the first interface.”
37
K. “allocating the shared wireless bandwidth between the wireless base station transmitting
in the downlink direction and the at least one CPE station transmitting in the uplink
direction” and “allocate wireless bandwidth between the uplink direction and the downlink
direction responsive to the analyzed packet contents and the analyzed reservation requests”
“allocating the shared wireless bandwidth between the wireless base station transmitting
in the downlink direction and the at least one CPE station transmitting in the uplink
direction”
(’517 Patent, Claim 1)
Plaintiff’s Proposed Construction
Defendants’ Proposed Construction
Plain meaning, no construction necessary.
“allocating the shared wireless bandwidth
between (1) the wireless base station
transmitting in the downlink direction and
(2) the at least one CPE station transmitting in
the uplink direction”
“allocate wireless bandwidth between the uplink direction and the downlink direction
responsive to the analyzed packet contents and the analyzed reservation requests”
(’517 Patent, Claim 12)
Plaintiff’s Proposed Construction
Defendants’ Proposed Construction
Plain meaning, no construction necessary.
“allocate wireless bandwidth between (1) the
uplink direction and (2) the downlink direction
responsive to the analyzed packet contents and
the analyzed reservation requests”
(Dkt. No. 110, Ex. B at 13–14; Dkt. No. 111 at 23; Dkt. No. 118 at 25; Dkt. No. 128-1 at 21–23.)
(1) The Parties’ Positions
Plaintiff argues: “Defendants’ proposal is not a construction at all, but rather an edited
version of the claim language. Defendants have simply inserted ‘(1)’ and ‘(2)’ into the claim
terms. These notational edits do nothing to assist the jury in understanding what is covered by the
claims.” (Dkt. No. 111 at 23.)
38
Defendants respond that “[c]onstruction of this term is necessary because IV’s unstated
‘plain meaning’ of this language—as evidenced in its infringement contentions—improperly seeks
to read the term ‘between’ out of the claim.” (Dkt. No. 118 at 25.)
Plaintiff replies that “[t]here is a disconnect in Defendants’ position because the notations
‘(1)’ and ‘(2)’ do not convey the complex limitations outlined in Defendants’ brief.” (Dkt. No. 126
at 10–11.)
(2) Analysis
Plaintiff’s reply brief expresses concern that Defendants are arguing that the allocating
must be done “dynamically” (see Dkt. No. 126 at 11), but no such proposal is apparent in
Defendants’ proposed construction or in Defendants’ responsive claim construction brief. (See
Dkt. No. 118 at 25–28.) Likewise, Plaintiff argues that Defendants have not justified requiring
“‘variable length’ subframes” (see Dkt. No. 126 at 11), but Defendants do not appear to have
proposed any “subframes.” Similarly, Plaintiff has not shown how Defendants’ proposal would
“preclude coverage of allocating bandwidth ‘between’ multiple CPE stations.” (Id. at 12.)
Rather than having presented any apparent claim construction dispute, the parties are
disputing whether Plaintiff’s infringement contentions have properly applied the claim language.
This dispute relates to factual questions of infringement rather than any legal question for claim
construction. See PPG Indus. v. Guardian Indus. Corp., 156 F.3d 1351, 1355 (Fed. Cir. 1998)
(“after the court has defined the claim with whatever specificity and precision is warranted by the
language of the claim and the evidence bearing on the proper construction, the task of determining
whether the construed claim reads on the accused product is for the finder of fact”); see also Eon
Corp. IP Holdings LLC v. Silver Spring Networks, Inc., 815 F.3d 1314, 1318–19 (Fed. Cir. 2016)
(citing PPG).
39
The Court therefore hereby construes “allocating the shared wireless bandwidth
between the wireless base station transmitting in the downlink direction and the at least one
CPE station transmitting in the uplink direction” and “allocate wireless bandwidth between
the uplink direction and the downlink direction responsive to the analyzed packet contents
and the analyzed reservation requests” to have their plain meaning.
L. “said plurality of packets”
Plaintiff’s Proposed Construction
Defendants’ Proposed Construction
Plain meaning, said two or more packets
“the plurality of packets” that are scheduled for
communication over a shared wireless
bandwidth are the same plurality of packets
that are classified
Or, alternatively:
“the same plurality of packets that are
classified”13
(Dkt. No. 110, Ex. B at 14; Dkt. No. 111 at 24; Dkt. No. 118 at 28; Dkt. No. 128-1 at 9.) The
parties submit that this term appears in Claim 109 of the ’206 Patent. (Dkt. No. 110, Ex. B at 14.)
(1) The Parties’ Positions
Plaintiff argues: “Defendants’ construction rewrites the claim. A plurality of packets is
first classified and then scheduled. Defendants’ construction requires an additional step: that the
plurality of packets must also be actually communicated (i.e., transmitted and/or received).” (Dkt.
No. 111 at 25.)
Defendants respond that “IV’s proposed construction (that ‘plurality’ refers to ‘two or
more’) does not address the parties’ actual dispute,” which is “whether the ‘said plurality of
13
Defendants previously proposed: “‘the plurality of packets’ that are communicated over a shared
wireless bandwidth are the same plurality of packets that are classified.” (Dkt. No. 110, Ex. B at
14.)
40
packets’ are the same plurality of packets referred to throughout the claim.” (Dkt. No. 118 at 28.)
Defendants urge that “the plain language of the claim supports a finding that the plurality of
packets that are scheduled for communication over a shared wireless channel are the same plurality
of packets that are classified.” (Id. at 29.)
Plaintiff replies that “IV’s construction explicitly includes the word ‘said,’ and Defendants’
criticisms on that point are misplaced.” (Dkt. No. 126 at 12.)
(2) Analysis
Claim 109 of the ’206 Patent recites (emphasis added):
109. A method for scheduling packets comprising:
classifying a plurality of packets according to end-user quality of service
(QoS) requirements of said plurality of packets; and
scheduling said plurality of packets for communication in at least one of an
upstream direction and a downstream direction over a shared wireless bandwidth
according to a scheduling algorithm.
The claim thus requires that the packets that are scheduled are the same packets that are
classified. See Summit 6, LLC v. Samsung Elecs. Co., 802 F.3d 1283, 1291 (Fed. Cir. 2015)
(regarding “said one or more pre-processing parameters,” finding that “[t]he use of the term ‘said’
indicates that this portion of the claim limitation is a reference back to the previously claimed ‘preprocessing parameters’”); see also In re Varma, 816 F.3d 1352, 1363 (Fed. Cir. 2016) (“For a dog
owner to have ‘a dog that rolls over and fetches sticks,’ it does not suffice that he have two dogs,
each able to perform just one of the tasks.”); Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1342
(Fed. Cir. 2016) (regarding “a logical table,” finding that the limitations at issue were required to
be “in the same logical table”).
The Court therefore hereby finds as follows regarding the term “said plurality of packets”:
Both instances of “said plurality of packets” in Claim 109 of the ’206 Patent refer back to
the same “plurality of packets” recited in the phrase “classifying a plurality of packets.”
41
V. CONCLUSION
The Court ADOPTS and ORDERS the constructions set forth in this opinion for the
disputed terms of the patent-in-suit, and in reaching conclusions the Court has considered extrinsic
evidence. The Court’s constructions thus include subsidiary findings of fact based upon the
extrinsic evidence presented by the parties in these claim construction proceedings. See Teva, 135
S. Ct. at 841.
The parties are ORDERED that they may not refer, directly or indirectly, to each other’s
claim construction positions in the presence of the jury. Likewise, the parties are ordered to refrain
from mentioning any portion of this opinion, other than the actual definitions adopted by the Court,
in the presence of the jury. Any reference to claim construction proceedings is limited to informing
the jury of the definitions adopted by the Court.
Within thirty (30) days of the issuance of this Memorandum Opinion and Order, the parties
are hereby ORDERED, in good faith, to mediate this case with the mediator agreed upon by the
parties. As a part of such mediation, each party shall appear by counsel (with lead and local counsel
present and participating) and by at least one corporate officer possessing sufficient authority and
control to unilaterally make binding decisions for the corporation adequate to address any good
faith offer or counteroffer of settlement that might arise during such mediation. Failure to do so
shall be deemed by the Court as a failure to mediate in good faith and may subject that party to
such sanctions as the Court deems appropriate. No participant shall leave the mediation without
the approval of the mediator.
42
SIGNED this 19th day of December, 2011.
So ORDERED and SIGNED this 6th day of November, 2018.
____________________________________
RODNEY GILSTRAP
UNITED STATES DISTRICT JUDGE
43
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